America Online, Inc. v. Inforian, Inc.
Claim Number: FA0207000115086
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Inforian, Inc., Cerritos, CA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cicq.net>,
registered with Network Solutions.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 12, 2002; the Forum received a hard copy of the
Complaint on July 12, 2002.
On
July 19, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <cicq.net> is
registered with Network Solutions and that Respondent is the current registrant
of the name. Network Solutions has
verified that Respondent is bound by the Network Solutions registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
July 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 8,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@cicq.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 20, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<cicq.net> domain name is
confusingly similar to Complainant's ICQ mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the ICQ mark in
commerce in relation to telecommunication services since November of 1996. Complainant has registered the mark in many
countries throughout the world including Austria, Australia, Israel, Italy,
Germany, France, Denmark, Norway, China, Chile, Spain, and Switzerland. Complainant also registered the mark in the
United States with the United States Patent and Trademark Office as
Registration Number 2,411,657 on December 12, 2000. Complainant is also the owner of a family of marks that
incorporate the ICQ letters including marks such as: ICQMAIL, ICQGAMES, and
ICQPHONE.
Complainant services millions of
customers a year under the ICQ mark.
Customers worldwide obtain goods and services under the mark, and even
more are exposed through Complainant’s advertising on radio, TV and print
media. Complainant has spent a
substantial amount of money on advertising, and has created a significant
amount of goodwill in its ICQ mark as a result.
Respondent registered the disputed <cicq.net> domain name on August 11,
1998. Respondent’s website at the
disputed domain name advertises CICQ communication services, and creates the
impression that Respondent is affiliated with Complainant. Respondent is on notice of Complainant’s
rights in the ICQ mark because it was the Defendant of a lawsuit filed by
Complainant in the Eastern District of Virginia for trademark infringement and
dilution in July of 2000. The lawsuit
however, was dismissed without prejudice for lack of personal
jurisdiction. After the lawsuit was
dismissed Complainant attempted to amicably resolve the dispute, and Respondent
agreed to cease using the disputed domain name. Respondent has failed to carry out its agreement with
Complainant. Respondent has also
registered other domain names that incorporate Complainant’s well-known ICQ
mark including, <picq.com>, and
<picq.net>.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the ICQ mark through registration and widespread use throughout the
world. Respondent’s <cicq.net>
domain name is confusingly similar to Complainant’s ICQ mark because it
incorporates Complainant’s entire mark and merely adds the letter “c” to the
beginning. The addition of a single
letter to a well-known mark does not create a distinct mark capable of
overcoming a claim of confusingly similarity.
See America Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that
<oicq.net> and <oicq.com> are confusingly similar to Complainant’s
mark, ICQ); see also Am. Online Inc. v. Chinese ICQ Network,
D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in
the domain name <4icq.com> does nothing to deflect the impact on the
viewer of the mark ICQ and is therefore confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Respondent is using a confusingly similar
domain name in order to attract Internet users to a website that competes with
Complainant’s services. This type of
use is not considered to be a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor is it considered to be a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Vapor Blast Mfg. Co. v. R
& S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc.
v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona
fide use where Respondent used the domain name to divert Internet users to its
competing website); see also Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the Complainant has
not licensed or otherwise permitted the Respondent to use any of its trademarks
and (ii) the fact that the word TELSTRA appears to be an invented word, and as
such is not one traders would legitimately choose unless seeking to create an
impression of an association with the Complainant, demonstrate that Respondent
lacks rights or legitimate interests in the domain name).
Respondent has not come forward with any
evidence that establishes that it is commonly known as CICQ or <cicq.net>. Respondent is known to this Panel only as “Inforian, Inc.” Therefore, Respondent has not established
that it has rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent owns at
least two other variations of the ICQ mark as domain names (<picq.com>
and <picq.net>), as well as the fame of Complainant’s mark worldwide, it
can be inferred that Respondent registered and used the disputed domain name in
order to create a likelihood of confusion as to the source, sponsorship and
affiliation of the domain name in order to attract Complainant’s customers to
Respondent’s website for Respondent’s commercial gain. This behavior is considered to be evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also
Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent).
Respondent has engaged in a pattern of
registering domain names that infringe upon Complainant’s ICQ mark. Respondent’s behavior therefore constitutes
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark); see also Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that
registration of more than one domain name that infringes on another’s
registered mark(s) supports the inference that the Respondent knew of the
Complainant’s marks upon registering the domain names; and the registration of
multiple domain names that infringe on the Complainant’s trademark(s) is
evidence of a pattern of conduct).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <cicq.net> be transferred from Respondent to
Complainant.
Dated: August 26, 2002
Judge
Harold Kalina (Ret.), Panelist
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